Case 1:22-cv-03779 Document 1 Filed 05/09/22 Page 1 of 27
`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 1 of 27
`
`David H.Bernstein (dhbernstein@debevoise.com)
`Kathryn C. Saba (ksaba@debevoise.com)
`Marissa P. MacAneney (mpmacaneney@debevoise.com)
`DEBEVOISE & PLIMPTON LLP
`919 Third Avenue
`New York, New York 10022
`(212) 909-6000
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`eee ee ee ee ee eeeeee ee eeeeee x
`
`THE JAMES BEARD FOUNDATION,INC.,
`
`: No.
`
`COMPLAINT
`
`; -
`
`v.
`
`EPIC-CURE,INC.,
`
`Plaintiff,
`
`Defendant.
`
`eee ee ee ee ee eeeeee ee eeeeee x
`
`Plaintiff The James Beard Foundation (‘Plaintiffor “JBF’’), by and throughits
`
`attorneys, Debevoise & Plimpton LLP, brings this action against Defendant Epic-Cure,Inc.
`
`(“Defendant”), and in support thereof alleges as follows:
`
`INTRODUCTION
`
`1.
`
`JBF — the nation’s leading organization dedicated to the culinary arts and
`
`advocacyrelated to the food industry — uses the GOOD FOOD FOR GOODtrademark in
`
`connection with charitable food-related services and initiatives, including programs devoted to
`
`the prevention of food waste and cultivation of food sustainability.
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`

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`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 2 of 27
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`2.
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`JBF’s mission is to support a food world that is equitable and sustainable.
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`“Fundamentally, JBF is about GOOD FOOD FOR GOOD.”! Becausethis trademark is at the
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`core of JBF’s identity and charitable work, JBF not only uses the mark in connection withits
`
`charitable efforts but also prominently displays it on its website and at the top of each ofits
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`various social media pages on platforms including Facebook, Instagram, Twitter, TikTok,
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`LinkedIn, Pinterest, and YouTube.
`
`3.
`
`JBFis the successor-in-interest of earlier usage of the GOOD FOOD FOR GOOD
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`trademark by two other entities — Good Food For Good (“GFFG”) (a California nonprofit public
`
`benefit corporation), which also used the mark in connection with charitable services, and Good
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`Food For Good Inc. (“GFFGT’), which used the mark in connection with ketchup and other
`
`condiments.
`
`4.
`
`JBF, through its predecessor-in-interest, GFFG, has been using the GOOD FOOD
`
`FOR GOODtrademark in connection with charitable food-related services since October 2014.
`
`5.
`
`JBF, through its predecessor-in-interest, GFFGI, has been using the GOOD
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`FOOD FOR GOODtrademark in connection with ketchup and other condiments and sauces
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`since as early as March 2018.
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`6.
`
`Defendantis trying to capitalize on the goodwill that JBF and its predecessors-in-
`
`interest have cultivated through nearly a decade of use of the GOOD FOOD FOR GOOD
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`trademark. Defendantis using a nearly identical trademark that expropriates the entirety of
`
`JBF’s trademark and addsjust a single word at the end - GOOD FOOD FOR GOOD PEOPLE.
`
`Defendant uses this nearly identical trademark in connection with confusingly similar charitable
`
`1
`
`See The James Beard: Good Foodfor Good, YouTubeat 0:43 (Nov. 9, 2018),
`https://www.youtube.com/watch?v=zefV64WAAp8.
`
`

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`food-related services, including programsrelated to food rescue and the elimination of food
`
`waste.
`
`7.
`
`Defendant’s attempts to capitalize on the goodwill of the GOOD FOOD FOR
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`GOODtrademark, and relatedly, the renown of JBF asa reliable source of high-quality
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`charitable work in the food space, are likely to confuse consumers into believing that
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`Defendant’s services originate from JBFor, alternatively, are affiliated with, or sponsored or
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`approvedby, JBF.
`
`8.
`
`Asa non-profit organization that devotes substantial resources to charitable food-
`
`related causes, JBF applauds Defendant’s efforts to distribute rescued food and eliminate food
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`waste. Although Defendant’s charitable mission is commendable, its lack of respect for JBF’s
`
`exclusive rights in the GOOD FOOD FOR GOODtrademarkis not. JBF hastried to resolve this
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`matter amicably for more than eighteen months and through an opposition proceedingat the
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`Trademark Trial and Appeal Board (“TTAB”), all in order to avoid federal litigation between
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`these two charities. However, Defendant has repeatedly filed frivolous pleadings and motionsin
`
`the TTAB—all of which the TTAB hasrejected — in order to delay the resolution ofthis dispute.
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`Defendant has left JBF with no choice butto initiate this action to protect the ability ofits
`
`trademark to serve as a reliable indicator of source.
`
`9.
`
`JBF accordingly seeks injunctive relief prohibiting Defendant from continuing to
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`offer charitable food-related services and solicit donations under the GOOD FOOD FOR GOOD
`
`PEOPLEtrademark. Further, JBF also seeks a declaration stating that (1) JBF’s GOOD FOOD
`
`FOR GOODtrademarkis not merely descriptive and not deceptively misdescriptive; (2) JBF has
`
`not abandonedits rights to the GOOD FOOD FOR GOODtrademark,including with respect to
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`its two federal registrations of the mark — United States Trademark Registration Nos. 5,831,912
`
`

`

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`(the “’912 Registration”) and 5,784,858 (the “’858 Registration”); and (3) GFFG and GFFGI
`
`properly assigned their respective rights to the GOOD FOOD FOR GOODtrademark —
`
`including rights to the goodwill of their respective marks — to JBF.
`
`THE PARTIES
`
`10.
`
`JBF is a national not-for-profit 501(c)(3) organization incorporated in New York,
`
`with its principal place of business at 167 West 12" Street, New York, NY 10011.
`
`11.
`
`On information and belief, Defendant Epic-Cure, Inc. is a national not-for-profit
`
`501(c)(3) organization incorporated in Florida, with its principal place of business at 468 High
`
`Tide Drive, St. Augustine, FL 35080.
`
`12.
`
`According to Defendant’s application to register the GOOD FOOD FOR GOOD
`
`PEOPLEtrademarkbefore the United States Patent and Trademark Office (“USPTO”) (App.
`
`Serial No. 90/199,856), Defendant maintains a mailing address at 49 Oldox Road; Delmar, New
`
`York. Attached as Exhibit A is a true and correct copy of App. Serial No. 90/199,856.
`
`13.
`
`Defendant has informed JBF that Defendant recently expandedits operations and
`
`now operates in Florida, New York, Vermont, and California.
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`14.|Defendant maintains an interactive website accessible to individuals throughout
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`the United States. This interactive website — which includesat least twelve unauthorized uses of
`
`the infringing GOOD FOOD FOR GOOD PEOPLEtrademark — features active links through
`
`which users can donate to Defendant. The website also provides information regarding
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`Defendant’s charitable food-related services.
`
`15.
`
`At least one New York consumerhas donated to Defendant. The “Supporters”
`
`sub-page of Defendant’s website, lists Jeremy Manning,Esq.as a “Director’s Circle” donor of
`
`

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`between $10,000 and $24,999.2 Mr. Manningalsois listed as Defendant’s counsel in connection
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`with App. Serial No. 90/199,856 for the confusingly similar GOOD FOOD FOR GOOD
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`PEOPLEmark. See Ex. A. According to that application, Mr. Manning’s address is 49 Oldox
`
`Road, Delmar, NY 12054. Jd.
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`JURISDICTION AND VENUE
`
`16.‘
`
`This Court has subject matter jurisdiction over Plaintiff’s claims under the
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`Lanham Act, pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338.
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`17.
`
`This Court has supplemental jurisdiction over Plaintiff's New York State law
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`claim pursuant to 28 U.S.C. § 1367(a).
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`18.
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`This Court has personaljurisdiction over Defendant because, on information and
`
`belief, Defendant has recently expandedits operations into and transacted business within the
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`State of New York (including, but not limited to, through the solicitation and acceptance of
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`charitable donations in New York).
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`19.
`
`Venueis properin this judicial district pursuant to 28 U.S.C. § 1391(b)(2)
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`because a substantial part of the events or omissionsgivingrise to the claims occurredin this
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`District, and a substantial part of the property that is the subject of this action — the GOOD
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`FOOD FOR GOODtrademark — is situated in this District, where JBF is based.
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`FACTUAL BACKGROUND
`
`JBF AND ITS USE OF THE GOOD FOOD FOR GOOD TRADEMARK
`
`20.
`
` JBF is the nation’s leading organization dedicated to the culinary arts and to
`
`advocacyrelated to the food industry. JBF’s missionis to celebrate, support, and elevate the
`
`people behind America’s food culture and champion a standard of good food anchored intalent,
`
`2
`
`Supporters, Epic-Cure, Inc., https://www.epic-cure.org/blank (Last visited Apr. 29, 2022).
`
`

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`equity, and sustainability. Among JBFs efforts to advance the public interest are that it provides
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`scholarships to aspiring chefs, organizes conferences to support sustainability, advocates for
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`smart and fair food policies, promotes the advancement of womenin the culinary profession, and
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`works to reduce food waste.
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`21.|JBF ownsthe federally-registered GOOD FOOD FOR GOODtrademark and uses
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`that tradmark in connection with its charitable food-related services, including its advocacy,
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`thought leadership, and educational programs to reduce food waste and support a more
`
`sustainable food system.
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`22.
`
`For example, as part of its GOOD FOOD FOR GOODethos, JBF launched
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`“Waste Not,” a multi-year campaign to encourage chefs to reduce food waste through full-use
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`cooking methods. JBF spotlights #WasteNotWednesdays and sharestips for limiting food waste.
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`JBFalso offers a food waste reduction curriculum.
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`23.
`
`JBF features the GOOD FOOD FOR GOODtrademarkacross its website and
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`social media platforms, which have hundreds of thousands of followers.
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`24.
`
`~Asof May 9, 2022, JBF’s Facebook page — which prominently displays the
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`GOOD FOOD FOR GOODtrademark — wasliked by approximately 166,253 users.’
`
`25.
`
`As of May 9, 2022, JBF’s Instagram account — which prominently displays the
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`GOOD FOOD FOR GOODtrademark — had approximately 591,000 followers.*
`
`26.
`
`As of May 9, 2022, JBF’s Twitter account — which prominently displays the
`
`GOOD FOOD FOR GOODtrademark — had approximately 541,400 followers.°
`
`3
`
`4
`
`The James Beard Foundation, Facebook, https://www.facebook.com/beardfoundation/ (Last visited May 9,
`2022).
`
`@beardfoundation, Instagram, https://www.instagram.com/beardfoundation/?hl=en (Last visited May 9,
`2022).
`
`

`

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`27.
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`As of May 9, 2022, JBF’s LinkedIn account — which prominently displays the
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`GOOD FOOD FOR GOODtrademark — had approximately 12,300 followers.°
`
`28.
`
`As of May 9, 2022, JBF’s TikTok account — which prominently displays the
`
`GOOD FOOD FOR GOODtrademark — had approximately 22,500 followers.’
`
`29.
`
`As of May 9, 2022, JBF’s Pinterest account — which prominently displays the
`
`GOOD FOOD FOR GOODtrademark — had approximately 5,200 followers.®
`
`30.
`
`And as of May 9, 2022, JBF’s YouTube account — which includes videos
`
`prominently featuring the GOOD FOOD FOR GOODtrademark — had approximately 3,240
`
`subscribers.”
`
`
`
`
`
`31.|The JBF YouTube :|@ sicnm= GdouTube Search Q & w
`
`
`
`
`
`
`
`
`
`account features a video entitled
`
`Good Food for Good
`
`“The James Beard Foundation: Good
`
`.
`.
`JAMES
`Food For Good,” which describes
`BEARD
`—_jomesbeardoorg
` and depicts JBF’s charitable work —
`
`The James Beard Foundation: Good Food for Good™
`
`including its bootcamps, food waste
`Liat woe Nosaie
`:
`:
`James Beard Foundation
`curriculum,and sustainable seafood @ 3.23K subscribers
`
`8 GJ DISLIKE A) SHARE
`
`=+ SAVE
`
`‘
`partnerships
`
`_
`
`‘
`and prominently
`
`The James Beard Foundation’s missionis to celebrate, nurture, and honor chefs and other leaders
`making America's food culture moredelicious, diverse, and sustainable for everyone. Learn more
`about our history and programsat jamesbeard.org
`
`features the GOOD FOOD FOR GOODtrademark, as shown above. '°
`
`5
`
`7
`
`8
`
`9
`
`@beardfoundation, Twitter,
`https://twitter.com/beardfoundation?ref_src=twsrce%5Egoogle%7Ctwcamp%5Eserp%7Ctwer%5Eauthor (Last
`visited May 9, 2022).
`
`The James Beard Foundation, LinkedIn, https://www.linkedin.com/company/the-james-beard-foundation/
`(Last visited May 9, 2022).
`
`@beardfoundation, TikTok, https://www.tiktok.com/@beardfoundation?lang=en (Last visited May 9, 2022).
`
`@beardfoundation, Pinterest, https://www.pinterest.com/beardfoundation/ (Last visited May 9, 2022).
`
`The James Beard Foundation, YouTube,https://www.youtube.com/watch?v=zefV64WAAp8(Last visited
`May9, 2022).
`
`

`

`Case 1:22-cv-03779 Document 1 Filed 05/09/22 Page 8 of 27
`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 8 of 27
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`32.
`
`Achart showing JBF’s uses of the GOOD FOOD FOR GOODtrademark on each
`
`of JBF’s social media accounts is included below.
`
`
`
`Social Media Forum
`
`Use of the GOOD FOOD FOR GOOD Trademark
`
`
`
`® 47 (311)-Nonprofit Organization Like
`
`Facebook
`
`@ JamesBeardFoundation@
`
`o>
`
`Brel ae yc:]
`
`2
`
`& Martha and 166,253otherslike this
`
`Home
`
`Fundraisers
`
`About
`
`
`Posts
`
`Videos
`
` Liw
`
`Q&,
`
`&)
`
`(212) 675-4984
`
`info@jamesbeard.org
`
`@ http://iamesbeard.org/
`
`(@) Good food for good®
`
`
`
` Nonprofit Organization
`
`Instagram
`
`<
`
`beardfoundation ©
`
`Twitter
`
`5,058
`Posts
`
`591K
`Followers
`
`4,375
`Following
`
`James Beard Foundation
`
`Nanprofit organization
`Good food for good®
`likeshop.me/beardfoundation
`
`3,315 Following 541.4K Fo
`
`James Bea
`oundé
`
`10
`
`The James Beard Foundation: Good Food For Good, YouTube (Nov.9, 2018),
`https://www.youtube.com/watch?v=zefV64WAAp8&t=9s.
`
`
`
`

`

`Case 1:22-cv-03779 Document 1 Filed 05/09/22 Page 9 of 27
`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 9 of 27
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`Social Media Forum
`
`LinkedIn
`
`=
`
`in
`
`
`
`
`
`
`The James Beard Foundation
`Good food for good®
`Food and Beverage Services - New York, NY - 12,300 followers
`
`
`
`
`TikTok
`
`<
`
`James Beard Foundation
`
`was
`
`
`
`
`
`
`
`
`
`
`@beardfoundation ©
`
`39
`
`22.5K
`
`494.9K
`
`Follow
`
`(6)
`
`v
`
`Good food for good*®
`
`@& jamesbeard.org
`
`
`
`
`
`Pinterest
`
`
`
`
`
`
`
`James Beard Foundation
`
`@ jamesbeard.org | @beardfoundation : Good food for
`good ®
`
`5.2k followers : 63 following
`
`

`

`Case 1:22-cv-03779 Document 1 Filed 05/09/22 Page 10 of 27
`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 10 of 27
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`
`
`
`
`Social Media Forum Use of the GOOD FOOD FOR GOOD Trademark
`
`YouTube
`
`= Wdyoulube
`
`Search
`
`EL
`
`~-
`
`
`
`i
`
`>
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`
`eo G8 GO of
`
`The James Beard Foundation: Good Food for Good™
`
`33.
`
`In addition, JBF uses the GOOD FOOD FOR GOODtrademark on the
`
`fundraising website Tiltify, as shown below.
`
`TILTIFY
`
`4Ip
`
`James Beard Foundation
`Goce Food Gor Gon hl)
`
`Seem et eel
`
`Donate
`
`
`
`11
`
`The James Beard Foundation, Tiltify, https://tiltify.com/james-beard-foundation (Last visited Apr. 29, 2022).
`
`10
`
`

`

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`34.
`
`JBF also uses the GOOD FOOD FOR GOODtrademark in connection with
`
`awards honoring culinary professionals who further JBF’s mission of making America’s food
`
`culture more sustainable and equitable for everyone.
`
`35.
`
`Below is an imageof the banner of a webpage through whichtickets to the May
`
`2019 James Beard Awards weresold.
`
`
`
`JBF’S ACQUISITION AND REGISTRATION
`OF THE GOOD FOOD FOR GOOD TRADEMARK
`
`36.
`
`JBF not only consistently uses the GOOD FOOD FOR GOODtrademark, but
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`also has two federal registrations of the mark — the ’912 Registration and the ’858 Registration.
`
`37.|On September 18, 2018 — prior to applying for the ’912 Registration — JBF
`
`acquired from GFFG,its rights to the GOOD FOOD FOR GOODtrademark for use in
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`connection with charitable services in the food industry. Attached as Exhibit B is a true and
`
`correct copy of the Agreement of Sale through which GFFGassignedits rights to the GOOD
`
`FOOD FOR GOODtrademark to JBF.
`
`38.
`
`Before assigningits trademark rights to JBF, GFFG had been continuously using
`
`the mark in commerce since October 2014.
`
`39,
`
`On October 3, 2018, JBF applied to register GOOD FOOD FOR GOODin
`
`connection with a variety of charitable food-related services. App. Serial No. 88/140,916.
`
`2
`
`2019 James Beard Awards Gala, My Shopify, https://jbftickets.myshopify.com/pages/tickets-general-public
`(Last visited Apr. 29, 2022).
`
`11
`
`

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`40.
`
`JBF’s application was granted. On August 13, 2019, the USPTO issuedthe ’912
`
`Registration, which coversservices in International Classes 35, 36, and 41, including
`
`“Tp]romoting the interests of chefs by means of public advocacy”; “[c]haritable fundraising to
`
`support the culinary arts; [p|roviding scholarship for culinary students, chefs and other culinary
`
`professionals”; “[c]haritable servicesin the field of culinary arts, namely, mentoring chefs and
`
`other culinary professionals throughouttheir careers in the culinary arts; [p]roviding training and
`
`professional developmentto support culinary professionals’ charitable endeavors; [and]
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`[c]onducting fellowship training programsin the field of culinary arts.” Attached as Exhibit C is
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`a true and correct copy of the Certificate of Registration for the 912 Registration.
`
`41.
`
`On April 9, 2018, GFFGIfiled an application to register GOOD FOOD FOR
`
`GOODfor use in connection with ketchup.
`
`42.
`
` JBFfiled two requests for extension of time to oppose GFFGI’s application to
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`register GOOD FOOD FOR GOOD,on October 3, 2018 and November 2, 2018, respectively.
`
`However,the parties thereafter resolved their dispute and, on November7, 2018, GFFGI
`
`assignedall of its rights in the GOOD FOOD FOR GOODmark to JBF. Attached as Exhibit D
`
`is a true and correct copy of the November7, 2018 assignment.
`
`43.
`
`In addition, JBF provided GFFGIwith a perpetual, royalty-free, non-exclusive
`
`license to use the GOOD FOOD FOR GOODtrademark in connection with condiments. See
`
`Exhibit D.
`
`44.
`
`On June 25, 2019, the USPTO issued the ’858 Registration covering use of the
`
`GOOD FOOD FOR GOODtrademark in connection with “ketchup,”listing GFFGIas the
`
`owner. On July 11, 2019, JBF filed a Section 7 Request seeking a replacementregistration
`
`certificate identifying JBF as the ownerof the ’858 Registration. On December31, 2019, the
`
`12
`
`

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`USPTOissued a corrected Certificate of Registration, showing JBF as the ownerofthe ’858
`
`Registration. Attached as Exhibit E is a true and correct copy of the corrected Certificate of
`
`Registration for the °858 Registration.
`
`JBF’°S PLANS FOR EXPANDED USE
`OF THE GOOD FOOD FOR GOOD TRADEMARK
`
`45.
`
` JBF is expandingits work,andrelatedly its use of the GOOD FOOD FOR GOOD
`
`trademark, to a new role — it will be the anchor tenant of a new food hall opening at Pier 57,
`
`located within Manhattan’s Hudson River Park between West 14th Street and West 17th Street.
`
`The Pier 57 food hall is part of a larger $400 million development.
`
`46.
`
`As JBF’s President and Chief Operating Officer explained, JBF “is committed to
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`celebrating, supporting, and elevating the people behind America’s food culture,” and viewsits
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`presence at Pier 57 as “an exciting opportunity to bring [its] GOOD FOOD FOR GOOD
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`philosophyto both the industry and food lovers as part of a vibrant, community-centered
`
`space.”In support of that goal, JBF will curate vendors for the food hall that align with the
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`Foundation’s values of equity and sustainability.
`
`47.
`
`JBF will operate a mission-centered showcase kitchen, dining, and demonstration
`
`space, and a vendor kiosk featuring new chef-driven, fast-casual concepts selected by JBF in
`
`support of the Foundation’s mission of championing a standard of good food anchoredintalent,
`
`equity, and sustainability.“
`
`3
`
`14
`
`Aaron Ginsburg, Newfood hall at Pier 57 will be curated by the James Beard Foundation, 6sqft (Jan. 31,
`2022), https://www.6sqft.com/new-food-hall-at-pier-57-will-be-curated-by-the-james-beard-foundation/.
`
`Hudson River Park Trust Press Release, James Beard Foundation to Anchor New Food Hall at Pier 57
`(January 2022), https://hudsonriverpark.org/app/uploads/2022/04/Pier-57-Press-Release-FINAL.pdf.
`
`13
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`

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`DEFENDANT’S CONDUCT
`
`48.
`
`On information andbelief, in approximately September 2020 — long after the
`
`adoption, use, and registration of the GOOD FOOD FOR GOODtrademark by JBF andits
`
`predecessors-in-interest — Defendant adopted and began to use the slogan GOOD FOOD FOR
`
`GOOD PEOPLE. Throughthis use, Defendant has expropriated JBF’s trademark for its own
`
`slogan, which copiesthe entirety of JBF’s mark and simply appends one additional wordat the
`
`end: GOOD FOOD FOR GOOD PEOPLE. Defendantis using that confusingly similar and
`
`infringing slogan for its own food-related charitable and educational efforts that also are focused
`
`on preventing food waste and supporting food sustainability.
`
`49. Without authorization, Defendant uses the confusingly similar GOOD FOOD
`
`FOR GOOD PEOPLEslogan in connection with its food rescue and distribution services. In
`
`addition, Defendant uses the slogan in connection with its programs and classes on food rescue,
`
`waste, and sustainability — curriculum programs whichare very similar to those for which JBF
`
`uses the GOOD FOOD FOR GOODtrademark.
`
`50.
`
`Defendant prominently uses the confusingly stmilar GOOD FOOD FOR GOOD
`
`PEOPLEslogan throughout its website. For example, the homepage of Defendant’s website
`
`contains the following usage:
`
`by reducing harmful methane gas emission.
`
`ee
`Good Foodfor Good People™
`
`Werescue good food to win the battle against food insecurity while improving the health of our planet
`
`15
`
`Homepage, Epic-Cure, https://www.epic-cure.org/ (Last visited Apr. 27, 2022).
`
`14
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`

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`Case 1:22-cv-03779 Document 1 Filed 05/09/22 Page 15 of 27
`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 15 of 27
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`51.|The confusingly similar GOOD FOOD FOR GOODPEOPLEsloganis also used
`
`on the various sub-pages of the Epic-Cure website. For example, the “What Do We Do”sub-
`
`page repeats the slogan five times, including the prominent use displayed below:
`
`sustainable practices. The meals they prepare will be taken hometo feed their families.
`
`EPIC-
`
`DO
`WHAT
`Good Foodfor Good People™
`
`Improving eee aa4 7 [evelielate] food waste and uelcuties) an after- school care
`program using senior citizens to teach young students food preparation, nutrition, and
`
`52.|The bottom of most sub-pages of the Epic-Cure website includes an infringing use
`
`of the GOOD FOOD FOR GOOD PEOPLEslogan. Ifa user hovers over the slogan at the
`
`bottom of the webpage, an option to “DONATE”andhelp “end food waste,” appears.
`
`53.
`
`Defendantalso uses the confusingly stmilar GOOD FOOD FOR GOOD PEOPLE
`
`slogan on its social media pages.
`
`54.
`
`For example,
`
`slogan.
`
`Defendant’s Facebook
`
`accountincludesposts like
`
`the one depicted at right,
`
`featuring the GOOD FOOD
`
`FOR GOOD PEOPLE
`
`16 What Do We Do, Epic-Cure, https://www.epic-cure.org/what-we-do (Last visited Apr. 27, 2022).
`
`15
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`

`

`Case 1:22-cv-03779 Document 1 Filed 05/09/22 Page 16 of 27
`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 16 of 27
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`55.
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`And Defendant’s Instagram account includes the below post featuring the slogan.
`
`4:06
`
`o>
`
`c
`
`EPICCURE_FL
`Posts
`
`ay epiccure_fl
`
`Follow
`
`vee
`
`ELIMINATING .\
`FOOD INSECURITIES ="
`
`1 YEAR IN REVIEW
`a Rescued and
`, Return $32 invalue to
`
`Cr
`
`distributed
`over 4.7 MILLION
`
`oe
`
`ii
`the communities we
`serve for every $1 spent
`
`27,000
`Prevented 1,870 tons )
`of methanegas from a volunteer hours
`harming our atmosphere
`logged
`
`Served over
`@
`OO\65,000 FAMILIES
`i[ A \
`experiencing need
`
`or food insecurities eset eee eee eee eee
`eeesereeeeene
`Engaged 20 senior.@ * 660 distributions
`cit atoa eS total, almost 2
`youth to safely
`prepare meals
`pernny
`SC CCST RTECS TREO eee
`
`Epic-Cure rescues good food to win the battle against
`food insecurity while improving the health of our planet
`by reducing harmful methane gas emission.
`
`
`9YVAV
`
`16 likes
`
`W
`
`epiccure_fl This upcoming year, we will build upon the
`success of current programs and continue to expand to
`reach morefood insecure neighbors. Weare... more
`Nearambher 97 39071
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`vn
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`AQ
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`6&6
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`16
`
`

`

`Case 1:22-cv-03779 Document 1 Filed 05/09/22 Page 17 of 27
`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 17 of 27
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`56.
`
`On September 20, 2020, Defendantfiled an application before the USPTOto
`
`register the GOOD FOOD FOR GOOD PEOPLEslogan. See Exhibit A.
`
`JBF’S EFFORTS TO STOP DEFENDANT’S INFRINGING CONDUCT
`
`57.|On October 30, 2020, JBF sent Defendant a cease anddesist letter, requesting that
`
`Defendant discontinue the use of JBF’s GOOD FOOD FOR GOODtrademark and withdraw its
`
`application to register GOOD FOOD FOR GOOD PEOPLE.
`
`58.|Despite numerous communications between the parties, Defendant refused to
`
`discontinueits use of the slogan.
`
`59.
`
`On September 7, 2021, JBF filed opposition no. 91/271,512 — an opposition to
`
`Defendant’s application to register the GOOD FOOD FOR GOOD PEOPLEtrademark, before
`
`the TTAB (the “Opposition”). Defendant responded byfiling frivolous counterclaims to cancel
`
`JBF’s trademarkregistrations and frivolous affirmative defenses. JBF moved to dismiss those
`
`counterclaims andstrike the affirmative defenses. Under TTAB rules, during the pendency of a
`
`motion to dismiss, the proceeding is stayed and the parties are unable to pursue discovery. The
`
`TTAB eventually dismissed Defendant’s counterclaimsandstruck five ofits six affirmative
`
`defenses. Attached as Exhibit F is a true and correct copy of the TTAB’s March 4, 2022
`
`decision, granting JBF’s motion to dismiss Defendant’s counterclaims and granting in part JBF’s
`
`motion to strike Defendant’s affirmative defenses.
`
`60.
`
`Defendantthereafter filed a frivolous motion for reconsideration, which was
`
`promptly denied by the TTAB. Attached as Exhibit G is a true and correct copy of the TTAB’s
`
`April 19, 2022 decision, denying Defendant’s motion for reconsideration.
`
`61.
`
`On May4, 2022, Defendantfiled yet another set of counterclaims seeking
`
`cancellation of JBF’s Registrations. Those counterclaimsare as frivolousas the ones already
`
`17
`
`

`

`Case 1:22-cv-03779 Document 1 Filed 05/09/22 Page 18 of 27
`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 18 of 27
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`rejected by the TTAB, and are based on someof the sameessential arguments that the TTAB has
`
`plainly rejected in its prior opinions. Specifically, Defendant included insufficiently alleged
`
`counterclaims of cancellation on groundsthat (1) the °912 Registration is void forfailure to state
`
`the proper owner pursuant to 37 C.F.R. § 2.71(d); (2) the ’858 Registration is void for failure to
`
`state the proper owner pursuant to 37 C.F.R. § 2.71(d); (3) the GOOD FOOD FOR GOOD
`
`trademark is merely descriptive or deceptively misdescriptive; and (4) JBF has abandonedits
`
`rights in the GOOD FOOD FOR GOODtrademark. Attached as Exhibit H is a true and correct
`
`copy of Defendant’s amended answer and counterclaims. This frivolous filing Gf JBF were to
`
`continue to litigate this dispute in the TTAB rather than in this Court) would have required JBF
`
`to file yet another motion to dismiss and would have led to additional delay in the Opposition,all
`
`before the parties have even commenced discovery. Defendant’s dilatory tactics in the
`
`Opposition have in part prompted JBFto file this action and avoid any further prejudiceto its
`
`rights to the GOOD FOOD FOR GOODtrademark and any further delay in the adjudication of
`
`this dispute.
`
`62.
`
`Throughout the parties’ settlement negotiations, Defendant has repeatedly
`
`requested that the parties resolve their dispute by collaborating in their offering of services.
`
`Defendant’s repeated requests in that regard show that Defendant is hopingto be seen as offering
`
`services in cooperation or partnership with JBF so that it can benefit from an association with the
`
`nation’s leading organization dedicated to the culinary arts and advocacyrelated to the food
`
`industry. Although JBF respects Defendant’s mission, it has no desire whatsoeverto be
`
`associated with Defendant, which is whyit insists that Defendant discontinue use ofthis
`
`confusingly similar slogan.
`
`18
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`

`

`Case 1:22-cv-03779 Document 1 Filed 05/09/22 Page 19 of 27
`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 19 of 27
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`COUNTONE
`
`Trademark Infringement
`Section 32 of the Lanham Act, 15 U.S.C. § 1114
`
`63.
`
`64.
`
`JBF repeats and realleges each ofthe allegations aboveasif fully set forth herein.
`
`JBF’s GOOD FOOD FOR GOODtrademarkis registered on the Principal
`
`Register of the USPTO,as the °912 and ’858 Registrations.
`
`65.|Defendant’s unauthorized use of the confusingly similar GOOD FOOD FOR
`
`GOOD PEOPLEsloganis likely to cause confusion, mistake, or deception as to the affiliation or
`
`connection of Defendant’s GOOD FOOD FOR GOOD PEOPLE-brandedservices with JBF and
`
`the GOOD FOOD FOR GOODtrademark, and/oras to the origin, sponsorship, or approval of
`
`Defendant’s services by JBF.
`
`66.
`
`Defendant’s unauthorized use of the confusingly similar GOOD FOOD FOR
`
`GOOD PEOPLEslogan has caused damage to JBF and the good will embodied in JBF’s GOOD
`
`FOOD FOR GOODtrademark,in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114.
`
`67.
`
`Defendant’s wrongful acts will continue unless and until they are permanently
`
`enjoined, as authorized by 15 U.S.C. § 1116.
`
`68.
`
`Defendant’s acts have caused, and will continue to cause, irreparable injury to
`
`JBF unless and until they are enjoined.
`
`COUNT TWO
`
`False Designation of Origin
`Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)
`
`69.
`
`70.
`
`JBF repeats and realleges each ofthe allegations aboveas if fully set forth herein.
`
`JBF ownsall right, title, and interest in and to the GOOD FOOD FOR GOOD
`
`trademark, including all commonlaw rights in such trademark, for use in connection with
`
`charitable food-related goods and services and in connection with condiments and other sauces.
`
`19
`
`

`

`Case 1:22-cv-03779 Document 1 Filed 05/09/22 Page 20 of 27
`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 20 of 27
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`71.
`
`Defendant’s unauthorized use of the confusingly similar GOOD FOOD FOR
`
`GOOD PEOPLEsloganis likely to cause confusion, mistake, or deception as to the affiliation or
`
`connection of Defendant’s GOOD FOOD FOR GOOD PEOPLE-brandedservices with JBF and
`
`the GOOD FOOD FOR GOODtrademark, and/oras to the origin, sponsorship, or approval of
`
`Defendant’s services by JBF, constituting false designation of origin in violation of Section 43(a)
`
`of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).
`
`72.
`
`Defendant’s wrongful acts will continue unless and until they are permanently
`
`enjoined, as authorized by 15 U.S.C. § 1116.
`
`73.
`
`Defendant’s acts have caused, and will continue to cause, irreparable injury to
`
`JBF unless and until they are enjoined.
`
`Dilution under Section 360-1 of New York’s General Business Law
`
`COUNT THREE
`
`74.
`
`75.
`
`—JBF repeats and realleges each ofthe allegations aboveasif fully set forth herein.
`
`JBF ownsall right, title, and interest in and to the GOOD FOOD FOR GOOD
`
`trademark, including all commonlawrights in such trademark, for use in connection with
`
`charitable food-related services, as well as condiments and other sauces.
`
`76.
`
`Through prominent and continuous use in commerce, including commerce within
`
`New York, the GOOD FOOD FOR GOODMarkhas becomedistinctive.
`
`77.
`
`Defendant’s offering of unauthorized services under the GOOD FOOD FOR
`
`GOOD PEOPLEslogandilute, or are likely to dilute, the distinctive quality of the GOOD FOOD
`
`FOR GOODtrademark,and thus lessens the capacity of the GOOD FOOD FOR GOOD
`
`trademark to distinguish JBF’s goods and services. Defendant’s unauthorized provision of
`
`GOOD FOOD FOR GOOD PEOPLE-branded goodsandservices (including, but not limited to,
`
`charitable food related services related to sustainability and the elimination of food waste) causes
`
`20
`
`

`

`Case 1:22-cv-03779 Document 1 Filed 05/09/22 Page 21 of 27
`Case 1:22-cv-03779 Document1 Filed 05/09/22 Page 21 of 27
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`blurring in the minds of consumers as between the genuine products and services offered by JBF
`
`and Defendant’s unauthorized services, thereby lessening the capacity of the GOOD FOOD FOR
`
`GOODtrademark to serve as a unique identifier of JBF’s products.
`
`78.
`
`By the acts described above, Defendant has actually diluted,or is likely to dilute,
`
`the di